`Tel: 571-272-7822
`
`Paper 22
`Entered: May 27, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SANDOZ INC.,
`Petitioner,
`
`v.
`
`PHARMACYCLICS LLC,
`Patent Owner.
`
`
`
`Case IPR2019-00865
`Patent 9,795,604 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2019-00865
`Patent 9,795,604 B2
`
`
`
`On Tuesday May 12, Patent Owner emailed the Board to request
`
`
`
`authorization to “file a motion to strike improper new arguments included in
`
`Petitioner’s Reply Brief pursuant to 37 C.F.R. § 42.23(b).” Ex. 3001. The
`
`email specifically identified Section III.B and Section III.C.1 of Petitioner’s
`
`Reply as presenting new arguments. Id. Petitioner opposes Patent Owner’s
`
`request. Id. A teleconference was held on Friday, May 15, 2018, wherein
`
`both parties had the opportunity to discuss Patent Owner’s request with the
`
`panel.
`
`During the call, Patent Owner argued that the argument presented in
`
`Sections III.B and III.C of Petitioner’s Reply constitutes new argument and
`
`that it would be prejudiced by having to devote space in its Sur-Reply to
`
`addressing this material. Patent Owner made clear that resolution of
`
`whether Petitioner’s arguments were, in fact, new arguments, was not time
`
`sensitive and that it would not be prejudiced if we resolve the issue after oral
`
`argument. Patent Owner did, however, request that we issue a decision on
`
`whether to authorize its motion to strike before the deadline for filing its
`
`Sur-Reply. Patent Owner proposed that briefing on this issue occur on the
`
`same schedule as provided for motions to exclude.
`
`Petitioner argued that the material at issue was not new argument, that
`
`the material identified as new argument was not lengthy, and that Patent
`
`Owner did not act promptly in reaching out to the Board with its request for
`
`authorization.
`
`We share Petitioner’s concern that Patent Owner delayed in seeking
`
`authorization to file a motion to strike. See Patent Trial and Appeal Board
`
`2
`
`
`
`IPR2019-00865
`Patent 9,795,604 B2
`
`Consolidated Trial Practice Guide (Nov. 2019)1 at 81 (“Generally,
`
`
`
`authorization to file a motion to strike should be requested within one week
`
`of the allegedly improper submission.”) We also recognize that that the
`
`material at issue constitutes just two paragraphs in Petitioner’s Reply, and
`
`that Petitioner’s alleged new argument could be addressed in a Sur-Reply.
`
`However, we find that briefing on this issue would be helpful to the panel in
`
`resolving this issue. Accordingly, we authorize Patent Owner to file a
`
`motion to strike regarding only the material presented in Sections III.B and
`
`III.C of Petitioner’s Reply on the basis that it presents new argument.
`
`It is therefore,
`
`ORDERED that Patent Owner’s request for leave to file a motion to
`
`strike Sections III.B and III.C of Petitioner’s Reply is granted. Patent
`
`Owner’s motion shall not exceed three pages and shall be filed by DUE
`
`DATE 5 of the Scheduling Order (Paper 10), accounting for any stipulations
`
`to extend deadlines agreed to by the parties.
`
`FURTHER ORDERED that Petitioner may file an opposition to
`
`Patent Owner’s motion. Petitioner’s opposition shall not exceed three pages
`
`and shall be filed by DUE DATE 6 of the Scheduling Order (Paper 10),
`
`accounting for any stipulations to extend deadlines agreed to by the parties.
`
`FURTHER ORDERED that Patent Owner may file a reply to
`
`Petitioner’s Opposition. Patent Owner’s Reply shall not exceed one page
`
`and shall be filed by DUE DATE 7.
`
`
`
`
`
`
`
`1 Available at:
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
`
`3
`
`
`
`
`
`IPR2019-00865
`Patent 9,795,604 B2
`
`PETITIONER:
`
`Kirk T. Bradley
`Siraj M. Abhyankar
`ALSTON & BIRD LLP
`kirk.bradley@alston.com
`shri.abhyankar@alston.com
`
`
`
`PATENT OWNER:
`William B. Raich
`Erin M. Sommers
`Cora R. Holt
`Stefan O. Ochiana
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`william.raich@finnegan.com
`erin.sommers@finnegan.com
`cora.holt@finnegan.com
`stefan.ochiana@finnegan.com
`
`4
`
`
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